Category Archives: Enablement

Richard Storer et al. v. Jeremy Clark and United States (intervenor)

Docket No. 2015-1802 (appeal from PTAB No. 105,981) PROST, NEWMAN, DYK June 21, 2017 Brief Summary: Board interference decision that Storer’s (Idenix’s) provisional application was not enabled for the claims affirmed because, e.g., “the art, at least with respect to … Continue reading

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Allergan, Inc. v. Sandoz, Inc., Lupin Ltd., Lupin Pharmaceuticals, Inc., Hi-Tech Pharmacal Co., Inc.

Docket No. 2014-1275 LOURIE, LINN, HUGHES August 4, 2015 Brief Summary: DC conclusion of non-obviousness affirmed based on unexpected results and prior art’s teaching away. DC conclusions of no lack of written description or enablement also affirmed, as was its … Continue reading

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Vasudevan Software, Inc. (“VSi”) v. Microstrategy, Inc. et al. (“MS”)

Docket No. 2014-1094 CHEN, LINN, HUGHES April 3, 2015 Brief Summary: Claim construction determination based on prosecution history affirmed (applies 2015 SCOTUS Teva decision). Grant of SJ on written description and enablement reversed as expert testimony was not simply conclusory … Continue reading

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Promega Corp. et al. v. Life Technologies Corp. et al.

Docket No. 2013-1011, -1029, -1376 PROST(D), MAYER, CHEN December 15, 2014 Update, SCOTUS opinion (2/22/17): FC erred in its decision as “[t]he supply of a single component of a multi-component invention for manufacture abroad does not give rise to liability … Continue reading

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Alcon Research Ltd. v. Barr Laboratories, Inc.

Docket No. 2012-1340, -1341 NEWMAN, LOURIE, BRYSON March 18, 2014 Brief Summary: DC holding of no infringement affirmed; findings of no enablement and written description reversed. Its denial of Barr’s request for JMOL was also affirmed. Summary: Alcon appealed final … Continue reading

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Takeda Pharmaceutical Company et al. v. Zydus Pharmaceuticals USA, Inc.

Docket No. 2013-1406 PROST, PLAGER, CHEN February 20, 2014 Brief Summary: Claim term “400 μm or less” construed to refer to exactly “400 μm” and not “400 μm (+10%)” as determined by the DC. Claims also found not be invalid … Continue reading

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Teva Pharmaceuticals USA, Inc. et al. v. Sandoz Inc. et al.

Docket Nos. 2012-1567, -1568, -1569, -1570 RADER, MOORE, BENSON July 26, 2013 Brief summary: The term “molecular weight” was found indefinite; claims found enabled and not obvious because of preference expressed by and teaching away within prior art and supportive … Continue reading

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